2. One who seeks for patent protection
normally will file trademark applications although volume applications on the
one of them need not represent volume applications on the other one of them;

3. They both are categorized as intellectual
property rights;

4. They both are to be filed with the same
official authority.

It would appear that people often
consider that as a mixture of technology and law, patent is highly technical and
is difficult for laymen to really understand whereas trademark is relatively
simple.It would seem that this is
not necessarily correct in that:

1. If patent is a mixture of technology
and law, trademark should be a complex of style and law;

2. Although the patent practice has
complicate rules or principles for decision in various situations, the trademark
practice, e.g. similarity or dilution also involve in non-simple rules or
principles for judgment;

3. While to seek satisfactory patent
protection or desiredly enforce patent rights are not easy since technological
knowledge and sound patent-related skill are required, to acutely seek trademark
protection or properly enforce trademark rights are not either since some
trademark theories and practices must be realized.

Although it is anticipated that most
of our newsletters will be related to the patent field, we will not fail to
issue in respect of the trademark when there is good opportunity to update or
provide on the trademark side.

Summary of Developments

The ROC
Trademark Law was promulgated on May 6, 1920 to be effective as of January 1,
1921.It was heretofore amended on
November 23, 1935, on October 19, 1930, on October 24, 1958, on July 4, 1972, on
January 26, 1983, on November 29, 1985, on May 26, 1989, on December 22, 1993,
on May 7, 1997, on May 29, 2002, and finally on April 29, 2003.The final amendment was significantly made in order to keep
pace with the pace of march of events or be in alignment with advocacy or advice
of an international treaty.In the
last amendment, which was promulgated on May 28, 2003 to be effective as of
November 28, 2003, there are 50 articles amended, 40 articles newly added and 23
articles deleted.The outline or
details of the amendments, which were made will be discussed hereinafter.

Brief Items to be Discussed for Presenting Issues We Concern

* Objectives of the Trademark Law
(Article 1)

* Contents of Trademark (Article 2)

* Priority Claim (Article 4)

* Definitions of Trademark (Article
5)

* Trademark Use (Article 6)

* Restoration (Article 9)

* Electronic Procedure (Article 14)

* Examiner (Article 15)

* Application (Article 17)

* Divisional Application (Article
21)

* Exclusions from Registrability
(Article 23)

* Registration (Article 25)

* Payment of Registration Fee
(Article 26)

* Term (Article 27)

* Renewal (Article 28)

* Exemption from Trademark Rights
(Article 30)

* Divisional Application (Article
31)

* Trademark Recordal (Article 32)

* License (Article 33)

* Distinguishing Notice (Article
36)

* Pledge (Article 37)

* Abandonment (Article 38)

* Opposition (Article 40)

* Market Investigation Report
(Article 43)

* Partial Cancellation (Article 47)

* Conditions for Invalidation
(Article 50)

* Invulnerable Registration
(Article 51)

* Invalidating Examiners (Article
53)

* Results of Invalidation (Article
54)

* Res Judicata of Invalidation
(Article 55)

* Registration Repeal (Article 57)

* Trademark Use (Article 58)

* Infringement on Trademark Rights
(Article 62)

* Customs Practices (Article 65)

* Seizure Repeal (Article 66)

* Damages for Goods Being Seized
(Article 67)

* Certification Mark (Article 72)

* Collective Trademark (Article 76)

* Improper Use of Special Marks
(Article 79)

* Transition Provisions (Articles
84 ~ 92)

* Effective date (Article 94)

Detailed Analyses

* Objectives of the Trademark Law
(Article 1)

According to the legislative reasons,
the function of maintaining the fair competition order in the market can in fact
be derived from the objects listed in the current law.Especially, since kinds of new commercial actions closely
related to trademarks have been evolved and developed, making the maintenance of
fair competition order in the market, e.g. strengthening protections of the
famous trademark and geographic indication for alcohols has been the
international legislative trend.Specifically:

1. Article 6bis of Paris Convention for
protecting the intellectual property rights revised in Stockholm in 1967 and
Article 16 of TRIPs of the Uruguay round in April, 1994 both emphasized the
protection for famous trademarks for maintaining the market order through fair
competition;

2. The amended law has accordingly
reflected to this effect, e.g. prohibiting the registration of a trademark,
which might abate distinctiveness or reputation of famous trademark or mark as
provided in Article 23(1)(12).

* Contents of Trademark (Article 2)

Under the current law, there are a
trademark according to Article 2 and a service mark according to Article 72.Nevertheless, whether a trademark is to symbolize goods or service is not
always clear under the commercial activity nowadays.Further, it has been made clear by a precedent of Pan No. 794 by the
Administrative Court in 1984 that it is possible for goods and service to form a
similar concept under this law.

According to the new law, a trademark
shall cover the definition of the conventional trademark and service mark.Such amendment becomes more appropriate in that:

1. The new law will allow
multiple classes in one application, which will be impossible if multiple
classes cover goods and services;

2. Multiple-class application
will become impossible if a trademark is intended to be used in a plurality of
similar business items which, however, cannot be definitely judged to fall in
the purview of goods in a first class or services in a second class;

3. The international trademark
laws so tend.

In addition, under the current
trademark practice, a business certificate is required to substantiate that the
filed trademark is to distinguish goods in the ‘business,’ which is
incompliance with the requirement that no accompanying business certificate or
business indication shall be required upon entertaining a trademark application
as set forth in Article 3(7) of the Trademark treaty put through in Geneva on
October 27, 1994 so that the word, ‘business’ in the article is deleted.

Furthermore, one who files a trademark
application has so proved that it has the intention to use the trademark for
accumulating its reputation regardless in respect of goods or service.Accordingly, whether ‘bona fide intention’ to use a trademark in the
article is a declaratory or compulsory provision becomes indefinite.Accordingly, the ‘bona fide intention’ clause is deleted since the
trademark registration can be repealed through no use after registration
according to the new Article 57(1)(2).

* Priority Claim (Article 4)

According to Article 4(D) of the Paris
Convention, a priority claim needs only indicate the foreign filing date and the
country entertaining the application.As
to the application number for ascertaining whether it is the corresponding
application, it can be supplemented within the prescribed time period so that
the requirement of submitting the application number upon filing is deleted.

* Definitions of Trademark (Article
5)

This article is referred to
constituents of a trademark and its distinctiveness.As to constituents of a trademark, a color trademark is limited to a
color combination excluding registrability of a single color under the current
law.The amended law accordingly
makes it clear that a single color having become an identifying mark for goods
or service shall satisfy the distinctiveness required for a trademark.

Through developments of the world,
sound or 3-dimensional shape have gradually been recognized as competent
trademarks internationally so that they are so accepted according to the amended
law.

A trademark under this law shall be a
mark enabling relevant consumers to distinguish the identifying source.The judging standards shall be set by “relevant consumers of goods or
service.”Specifically, if goods
in daily use are concerned, the general public can make the judgment.If, however, goods or service are only circulated among experts or
practitioners, the judgment should be made by such experts or practitioners.Accordingly, “the general goods purchaser” clause in the article is
changed into “relevant consumers of goods or service.”

* Trademark Use (Article 6)

Article 6 has
been changed into that “the use of a trademark referred to in this Law shall
denote the use of the trademark on goods, services or its associated articles,
or through utilization of planar image, digital video/audio, electronic medium
or other medium, sufficient to cause associated consumers recognizing it as a
trademark, for marketing purpose” in order to reflect developments of
electronic commerce and the Internet for accounting for new trademark use type
and economic development situation.

* Restoration (Article 9)

Since quite a few trademark
applications are filed by foreigners, the time period for restoration before the
trademark dedicated office is still kept within 30 days, rather than 10 days as
stipulated in Article 50 of the Administrative Procedural Law, after extinction
of the involved cause since 10 days are too short to be followed by a foreigner.

* Electronic Procedure (Article 14)

Since the Executive Yuan alleges to
establish a healthy electronic governmental environment by promoting the
information processing standard, application, other procedures related thereto
and registration books may be electronically made.

* Examiner (Article 15)

According to the “Qualification
Ordinance for Trademark Examining Officials,” trademark examining officials
include trademark senior examining official, trademark examining official and
trademark assistant examining official.In
addition, as provided in “Organization Ordinance of Intellectual Property
Office of Ministry of Economic Affairs,” expert examining persons hired
thereunder may serve for the trademark examination work.The word examiner as referred to in the amendment trademark law include
above-described trademark examining officials and expert examining persons.

* Application (Article 17)

According to Article 17(2) that
“trademark in the preceding paragraph shall be presented in a visually
perceptible device,” a trademark must be clearly and concretely represented
since it involves in examination and publication of registration.As examples, the sound trademark should be depicted by a staff or other
note-representing manner and the 3-dimensional trademark should be represented
by the perspective view or other sketching manner.

One application with multiple classes
is made clear in this Article 17(4).

* Divisional Application (Article
21)

It appears very
natural for Article 21 to stipulate that “an applicant may petition before the
trademark dedicated office to divide designated goods or services to be used to
be included in two or more registration applications, which take the original
registration application date as the filing date.”Accordingly, it might be difficult to imagine that under the
current practice, the applicant cannot file a divisional application from the
original application and need to newly file an independent application seeking
protection for what are contained as a part in the original application, which
will certainly harm the rights of the applicant logically derivable from the
original application.Fortunately,
such mishap will come to an end soon.

* Exclusions from Registrability
(Article 23)

The time point for determining whether
a trademark belongs to an exclusion from registrability is the filing date in
practice.Nevertheless, since a
trademark can only be registered after examination only happening a certain
period of time after the filing date, it is not seldom found that although there
exists a case excluding the application from registrability upon filing, the
case vanishes upon examination such that there are no violation of the public
interests and/or no encumbrance to rights of others.Accordingly, the amended law takes it reasonable that the determining
time point should be the time when the examination takes place.

Amended Article 23(1)(3) excludes a
trademark “being general mark or name of designated goods or service” from
registrability.This new Item
combines together ‘common mark in custom’ of Item 8 and ‘general name’
of Item 10 of the current Article 37(1) since either of them has no
distinctiveness for distinguishing the source through common use in the same
trade or business.Furthermore,
under current Article 37(1)(8), there is a requirement of “in custom,”
which, however, is doubtful and deserves to be deleted since in this fast
changing era, it is quite possible that a trademark can become a common mark in
the trade or business in a short time.Still
more, whether a trademark similar to the common mark possesses distinctiveness
should be separately judged so that in the amended article there is no inclusion
of the “similar” situation.

Amended Article 23(1)(8) excludes a
trademark “identical or similar to name, emblem, badge or mark of an
international famous organization or domestic or foreign famous constitution”
from registrability.The term
‘international famous organization’ is replacing the term ‘red cross’
under the corresponding current law in order to broaden the coverage, e.g. UN,
APEC, WTO…etc..Further, the term
“foreign famous constitution” is replacing the current term “international
famous constitution” in order to make it clear that the constitution per se
needs not be international as long as it is internationally famous.

Amended Article 23(1)(12) adds
exclusion of a trademark “abating distinctiveness or reputation of famous
trademark or mark” from registrability where the word ‘abating’ we use is
equivalent to ‘diluting.’WIPO
published the common resolution for provisions regarding the protection of
famous trademarks in September, 1999, specifically pointing out that judging a
famous trademark shall consider the recognition by the relevant public, rather
than the general public, of goods or services.In other words, in addition not to causing confusion or mistake with
another person’s famous trademark, dilution to the famous trademark shall be
avoided.

Amended Article 23(1)(13) excludes a
trademark “identical or similar to another person’s registered trademark or
earlier filed trademark of identical or similar goods or service, thus likely
causing the public to confuse or mistake provided that this shall not apply
subject to consent to file from the owner of the registered trademark or earlier
filed trademark unless both trademark and designated goods or service to be used
are the same” from registrability.With
regard to this provision:

1. It combines provisions of the current
Article 37(1)(12) and Article 36;

2. The rationale for the above two current
articles is that it is likely to cause confusion or mistake to the consumer as a
result of the similarity;

3. It is thus clear under provisions of
current articles that whether there is a similarity and whether there is a
confusion or mistake sometimes are independently judged;

4. Nevertheless, judging whether two
trademarks constitute similar shall determine in totality whether it is likely
to cause confusion or mistake.In
order to make this concept clear, the law is thus amended.

Under Article 37(1)(11) of the current
law, rights of individual person and company are included altogether which are
respectively found in separate Articles 23(1)(15) and 23(1)(16) in order to have
a refined legislation since what is sought for the natural person is to protect
rights of personality of the individual whereas what is cared about the juristic
person is to safeguard the commercial order so that they should be
differentiated from each other in order not to confuse legal interests thereof.Further, the word ‘nationwide’ in the term ‘famous nationwide’ in
the current law is deleted since being famous, which appears to represent what
is involved in is considered famous in the sector of the relevant consumers,
itself is enough.Such deletion
gets some contributions from Explanation No. 486 of Great Judge Conference that
any name of juristic person or any other organization having no right capability
is eligible for protection under the Trademark Law as long as it has
‘substantial reputation’ and ‘interests for protection.’Since under the current law, if a trademark is identical to the name of
juristic person, trade business or other organization, whether it is registrable
is determined by whether goods designated to be used by the trademark are the
same with those run by juristic person or trade business.Which is considered improper under the amended Law since whether it is
registrable should be determined by whether the relevant public is likely caused
to confuse and mistake in the matter.

Article 23(1)(17) newly excludes the
registrability of a trademark “having been irrevocably adjudged that the
trademark infringes copyright, patent right or other right of another person
provided this provision shall not apply subject to consent to file for
registration from said another person.”

Article 23(1)(18) newly excludes the
registrability of a trademark “identical or similar to the alcohol geographic
indication of this country or country or territory having reciprocal recognition
as to trademark protection with this country and designated to be used in
alcohol goods” in order to protect the alcohol geographic indication.

* Registration (Article 25)

According to Article 41 of the current
law, a trademark will be registered only after there is no opposition during the
3-month publication period or the opposition has been irrevocably dismissed.Nevertheless, in the current practice, only no more than 3% of the
allowed applications are opposed.Further,
among those which have been opposed, only 1% out of them are withheld.In order that most of the applications can get registered as earlier as
possible, the post-registration system is thus adopted.Accordingly, this article makes it clear that the trademark will be
registered and published after granted and paying the first installment of the
registration fee.

* Payment of Registration Fee
(Article 26)

According to the amended law, the
trademark will be published and registered only after the registration fee is
paid.Accordingly, the registration
fee has a significant control on rights of the applicant.Under the present trademark practice, it is not seldom found
that a trademark has not been used for three years after registration or is not
interested to be used further.In
order that a trademark can be more effectively put into use in order to
naturally phase out short-period goods in the market, this article stipulates
that the registration fee can be paid in two installments in order to alleviate
the burden of the registrant.Nevertheless,
the second installment of the registration fee must be paid in three months
prior to the expiration of 3 years from the trademark registration or
publication.

* Term (Article 27)

Under the current law, a person trying
to use the same trademark device on the similar goods or using a similar
trademark device in the same goods shall seek registered an associated trademark
for protection.Such associated
trademark system is to be abolished as a result of reference with the abolitions
of associated trademarks by the UK and Japan Patent and Trademark Offices, in
order to avoid the unduly accumulation of the non-use trademark and to reduce
examination cost and difficulties in administrative management.

Under the current law, a person trying
to use the same trademark device on goods which are neither identical nor
similar to but are relevant in nature to those of the trademark shall seek
registered a defensive trademark for protection.Since the new law has provided the diluting provisions which can serve
for the purposes of a defensive trademark, the defensive trademark is to be
gradually abolished through the transition clause.

It might sound strange why the above
is relevant to the sub-title of “term”?This is because either the associated trademark or the defensive
trademark is to be expired with the principal trademark regardless of how late
they are filed with respect to the filing date or registration date of the
principal or regular trademark.

* Renewal (Article 28)

Under Articles 57(1)(2) and 59 of the
new law, a trademark registration will be terminated or abolished through non
use so that upon renewal, it should be unnecessary for the Trademark Office to
examine whether the trademark to be renewed has been used.In practice, most of trademark renewal applications have lawful uses.To determine by expending a substantial administrative resources as to
whether or not the trademark has been used upon examining the renewal
application will become clumsy and not wise simply because there are few
instances that the trademark to be renewed has not been used, which should be
the reason why Article 13(6) of the international Trademark Law Treaty prohibits
the substantive examination upon petitioning the renewal application.In order to substantiate the protection of rights of the people and the
promotion of the administrative efficiency as provided in Article 1 of the
Administrative Procedural Law in order that the applicant can obtain the renewed
trademark rights, the substantial examination for the renewal application should
be abolished while whether the trademark has been used is to be regulated
otherwise.

* Exemption from Trademark Rights
(Article 30)

Where the 3-dimensional shape of goods
or package is required for exercising its functionality, the use of such shape
should not be interfered by other’s trademark rights since the new law has
included the protection of 3-D trademark.

Where a person claims the exemption of
the trademark infringement claim that a same or similar trademark has been used
in good faith on the same or similar goods or service, the new law has made it
clear that the date prior to which such use happens should be the filing date of
other’s trademark registration.

The third paragraph of Article 30 of
the new law has also made it clear that for goods put in auction or disposed
under the law by the relevant authority, the trademark rights owner shall not
claim the trademark rights in respect of said goods.

* Divisional Application (Article
31)

According to Article 7(2) of the
Trademark Law Treaty, the original application for registration can be divided
during the period in which the trademark dedicated office is deciding whether a
registration shall be allowed or in which the legal proceedings are initiated.Perhaps, partly due to the fact that most of international organizations
do not accept or admit Taiwan, our current trademark law does not follow spirits
of the Trademark Law Treaty in this respect.

Specifically, under the current law,
if the applicant inadvertently puts one or more goods or service items, which
should be classified in other class, in a trademark application, the applicant
cannot file a divisional application for those one or more items but can only
file an independent application therefor.The
seriousness of this situation might be presented in the following case: if an
application is to be rejected, opposed or cancelled, the applicant can do
nothing but seeing its application being cruelly rejected, opposed or cancelled
totally, even if there will be happening that it will lose the rights to seek
registered the trademark to be used on those one or more items, which the
applicant can competently enjoy if it files those items in the correct class in
the very beginning.Such result
appears to be not so humane.

Accordingly, Article 31(2) makes it
clear that “the petition to divide the trademark rights in the preceding
paragraph may still be made before the trademark opposition or cancellation
application is irrevocably decided” in order that unless the trademark
opposition or cancellation application has been irrevocably decided, the
trademark applicant can optionally petition for a divisional application.

* Trademark Recordal (Article 32)

The new law makes it clear that any
change on the trademark registration matters shall be recorded before the
Trademark Office for public notice.If
not, the registrant shall not have a locus standi against any third party.

According to the amended Article
20(3), the applicant can in a change application simultaneously petition to make
the same change about the trademark registration matters for a plurality of
trademark applications.The amended
law makes it clear that such convenient measure is applicable to trademark
registrations.

* License (Article 33)

The
newly added Article 33(3) makes it clear that “where the trademark rights have
been assigned after the licensing recordation, the licensing contract shall
survive the assignee to subsist” so that use interests of the licensee are
duly protected.

If it is apparently difficult for
license indication on its goods, package, container, or goods or document in
business, the newly amended Article 33(4) makes it clear that “the licensing
notice may be made on business place or other relevant goods.”

* Distinguishing Notice (Article
36)

After amendments, since a trademark
application can be filed for goods and services of various classes, and the
trademark rights can be divided and optionally assigned, Article 36 has been
made clear that “if through assignment of the trademark rights, there are two
or more trademark rights owners using the same trademark on similar goods or
service or using the similar trademarks on identical or similar goods or
service, which is likely to cause confusion or mistake to the relevant consumer,
each trademark rights owner shall affix appropriate distinguishing notice in
use.”Specifically, the one who
is to affix appropriate distinguishing notice is not necessarily the assignor or
assignee.Rather, it is the
obligation of ‘each’ party.

* Pledge (Article 37)

In practice, there is doubt as to
whether the trademark rights can be established for several pledges.In order to secure the interests of the pledgee and to fully exploit the
transaction value of the trademark rights for the trademark owner, the amended
new law makes it clear that the trademark rights can have plural pledges so that
the owner can use the trademark rights as a surety for another’s credit but
its priority of the pledge depends on the order of recordation.

* Abandonment (Article 38)

The amended new law makes it clear on
the one hand that the owner can optionally abandon its trademark rights subject
to no damages causable damages or hurt to the licensee or pledgee, and on the
other hand that such abandonment should be made in written.

* Opposition (Article 40)

Under Article 15(5) of TRIPS, the
trademark should be published before or after its registration provided that
there is a reasonable opportunity to cancel the registration.The amended new law has changed the pre-registration opposition system
into the post-registration opposition system.Specifically, although there is the cancellation system after the
trademark registration under the current law, it can only be instituted by the
interested party rather than by any third party.In order to allow opposition by any third party, the post-registration
opposition system is introduced.

In practice, the opposition is
examined by one examiner whereas the cancellation is examined by three
examiners.Since the new law will
allow multi-class application, Article 40(2) makes it clear that “the
opposition in the preceding paragraph may be made in respect of a portion of
goods or service designated to be used by the registered trademark.”

* Market Investigation Report
(Article 43)

For deciding the existence of a truth
or fact, results of the market investigation should be referred sometimes.The availability as a proof for such market investigation might need to
be illustrated by parties.Accordingly,
this new article allows submission of the market investigation report and the
statement or illustration before the Office by the relevant party.

Although the market investigation
report will provide an aid upon examination, it remains unclear what are
standards or criteria for rendering a perfect examination while the examiner is
examining the market investigation report.

* Partial Cancellation (Article 47)

According to the amended Article 47,
“wherever the cause for cancellation in the preceding article exists in
partial goods or service designated to be used by a registered trademark, the
registration may be cancelled only in respect of said partial goods or
service.”As a matter of fact,
this is not a new provision since this is the practice in the past.Accordingly, this new amended article simply makes it clear what was and
is practiced here.

* Conditions for Invalidation
(Article 50)

Under the current law, a trademark
having been registered for 10 years is still susceptible of being invalidated.Accordingly, it relates to a provision of period for enforcing the
rights.After this new amendment,
since only formal examination rather than substantive examination will be
exercised for renewal registrations, its nature relates to maintenance of the
effectiveness of the original registration.Accordingly, the period for invalidation as to whether the original
registration violates the law is irrelevant to that for enforcing the rights.

Amended Article 50(2) stipulates that
“provision in the preceding paragraph shall be applied mutatis mutandis where
infringement of a trademark on copyright, patent right or other rights of other
before the registration has been irrevocably upheld by the court decision after
registration”, in order to make it clear that for a trademark registration
application infringing other’s copyright, patent right or other rights, which
is so irrevocably upheld by the court at the time before its registration, it
could be invalidated under amended Article 50(1).Also, even if it is so irrevocably upheld by the court at the
time after its registration, it could be likely invalidated under the same
article.

* Invulnerable Registration
(Article 51)

According to Article 6bis(2) of the
Paris Convention, the period for canceling or invalidating a mark, which is
identical or similar to a famous trademark or mark and is likely to cause
confusion and/or mistake to the relevant public is “at least” 5 years.

Under the current law, the
invalidation proceedings must be initiated by two years from publication of the
registration.Nevertheless, a mark
identical or similar to a registered trademark in identical or similar goods
under the current law can be subject to invalidation through all its lifetime,
i.e. 10 years.These two provisions
appear not that compatible, in view of the provision of Paris Convention.

As is known, after registered to have
been used for quite a few years, a trademark will build up its goodwill through
the continuous use.Such goodwill
should be put in a state for protection.For
reaching a state of equilibrium between the original trademark rights owner and
the new trademark applicant, the new law takes the 5-year period as justified.

The thoughts exercised in the
preceding paragraph is also applicable to the situation where a trademark is
irrevocably decided to have infringed other’s copyright, patent rights or
other rights after registration.

An exception to the above is that a
trademark registration violates the provision of amended Article 23(1)(12) and
is secured through bad faith since the original intention of such registration
is to prey benefits through unfair competition, as also outlined in Article
6bis(3) of Paris Convention.

* Invalidating Examiners (Article
53)

The amended law makes it clear that 3
invalidating examiners for examining the invalidation are selected from
trademark examiners by the head of the trademark office.

* Results of Invalidation (Article
54)

Whether a trademark having violations
against the law upon filing or being published for registration but having no
violation upon examination of invalidation shall be cancelled shall be judged by
the trademark-dedicated office through considerations of interests of the public
and the party.Such new provision
is made reference to Article 50(2) of the German Trademark Law.

* Res Judicata of Invalidation
(Article 55)

Amended Article 55 loosens the
conditions for limiting the petition of an invalidation proceeding.Specifically, the law no more requires that the decision or review for
invalidation be irrevocable or final.That
is, the amended law stipulates that “after an invalidation application has
been reviewed, any person may not petition for invalidation with the same fact,
the same evidence and the same grounds.”It is imaginable that a new invalidation proceeding with same fact, same
evidence and same grounds as those of the original proceeding will only cause a
waste of the administrative, including judicially administrative, resources.Accordingly, such amendment is considered to be appropriate.

Nevertheless, it would appear to us
that the conditions for limiting the petition of a new invalidation proceeding
could be further loosened.This is
because according to the new law, even if the Trademark Office is reviewing the
first invalidation proceeding, before it completes its review and renders its
decision on the first invalidation proceeding, the Trademark Office has still
the obligation to entertain a new invalidation proceeding with same fact, same
evidence and same grounds in theory.Nevertheless,
since this new invalidation proceeding will never present any new legal
environment or circumstance and any legally meaningful difference simply because
whether it is petitioned before the Trademark Office has completed its review
and rendered its decision on the first invalidation proceeding or not, it would
appear that the amended law does not loosen the limitation to the enough or full
extent.Specifically, we might
further amend the law into “after an invalidation application has been
entertained, any person may not petition for invalidation with the same fact,
the same evidence and the same grounds.”Through such amendments, the core concerns of the present amendment can
really find its final resolution.

* Registration Repeal (Article 57)

As is known, the Trademark Law is
related to the public interests.Accordingly,
this article is provided to urge the registrant to properly use its trademark.Thus, if there is violation against the law through use, any third party
shall be eligible for petitioning repealing the registration in order to secure
the public interests.It is
therefore that the limitation of qualification for repealing a registration by
an interested party is removed.

In the past, whenever there are
law-violating use or public interests considerations after the applicant has
legally obtained the registration, another administrative action is used to
“cancel” the original lawfully obtained trademark registration to
“terminate” its effect.Nevertheless,
such concept should relate to “repeal” rather than “cancel” so that the
terminology of “cancel” is used.

Under the current law, a trademark
registration shall be repealed if the registrant licenses other person to use
its trademark without recordal before the Trademark Office or does not rectify
the situation of violating the provision of license notice after notified to do
so in a prescribed period.Such
provision has been repealed since the new law takes that a license recordal
could merely generate a locus standi status, which, however, relates to a
private relationship by which it is improper for the law to impose the trademark
rights owner the obligation for license recordal.

Furthermore, repealing the trademark
registration simply because the registrant does not rectify the situation of
violating the provision of license notice after notified to do so in a
prescribed period is also considered unduly by the amended law whose Articles
33(4) and 34 make them clear that the license recordal will be repealed if the
license notice obligation is not followed and that license recordal repeal can
alternatively be made ex officio by the Trademark Office.

Under the amended Article 57(1)(4),
“the trademark having become the common mark, title or shape for designated
goods or service” shall be repealed from registration, which is newly added
through reference to Article 49 of German Trademark Law, Article 46 of UK
Trademark Law and Article 14 of the US Trademark Law, since the trademark will
have lost its distinctiveness.

Under the amended Article 57(1)(5),
“the trademark likely causing the general public to mistake or misbelieve the
nature, quality or place or origin of its goods or service in practical use”
shall be repealed from registration, which is newly added through reference to
Article 51 of Japan Trademark Law, and various Articles in different countries
mentioned in the preceding paragraph, in order to safeguard the registered
trademark from adversely affecting the transaction order through improper use.

The amended Article 57(1)(6) also
makes it clear that “the trademark having been irrevocably adjudged to
infringe upon copyright, patent right or other rights of other as a result of
use” shall be repealed from registration.

The
amended Article 57(2) also makes it clear that “the provision shall apply if
the trademark rights owner explicitly knows or may somehow know an action of a
licensee under the first Item of the preceding paragraph but expresses no
objection thereto” in order to curb the violating use.

The
newly added Article 57(3) makes it clear that “upon being petitioned for being
repealed through a case provided in Item 2 of the first paragraph (i.e. the
trademark having not been used or having stopped using for 3 full years),
the registration shall not be repealed if the registered trademark has been used
(since the situation has been changed), except the use begins in three
months prior to the repeal petition through the knowledge that other will
petition the repeal,” through the reference of Article 49(1) of German
Trademark Law and Article 50(3) of Japan Trademark Law.

Also,
the newly added Article 57(4) makes it clear that “where the cause for repeal
only exists against partial goods or services designated to be used by a
registered trademark, the registration may be repealed in respect of said
partial goods or service.”

* Trademark Use (Article 58)

Under the amended Article 6, the use
of a registered trademark must enable the domestic consumers to identify it is a
registered trademark.Nevertheless,
the newly added Article 58 makes it clear that the following modes of uses are
regarded as use of a trademark:

1. Although the trademark rights
owner should use its registered trademark according to what it has sought
registered, in practical use, the size, proportion or type are often modified as
the case may be.Accordingly, if
after such modification, the trademark is recognized as the same identity of the
registered trademark according to the general social concept, it should be
regarded as the use of the registered trademark;

2. Goods which are dedicated to
be exported might not be recognized by the domestic consumers although its
registered trademark does be used somehow.Accordingly, Article 58(2) makes it clear that “indicating the
registered trademark on goods for the export purpose or its relevant object”
will be regarded as use of the registered trademark.

* Infringement on Trademark Rights
(Article 62)

Trademark infringement disputes caused
through using words in a registered trademark as the company name, trade name,
domain name or other mark distinguishing business identity or origin are getting
more and more frequent recently.It
is thus compulsory to make it clear what modes of trademark rights infringement
are?Since such modes of
infringement are presumed or simulated, requirements therefore must be
especially strict, which is substantiated by the provision that there must be
the occurrence of “abatement” (i.e. dilution) or “confusing misbelief”,
which is different from the requirement of constituting a status of being
“likely to confusingly misbelieve”.Specifically:

1.For a famous trademark: Using an identical or similar trademark with
express knowledge of a famous registered trademark of other, thereby abating
distinctiveness or reputation of the famous trademark will be regarded as
infringement in order to protect the famous trademark.

2.For a registered trademark: With express knowledge of a registered
trademark of other, using the word in said trademark, thereby causing the
relevant consumer in respect of goods or service to confuse or mistake will be
regarded as trademark infringement.It
is to be noted here that “causing the relevant consumer in respect of goods or
service to confuse or mistake” for a registered trademark is required in
comparison to “abating distinctiveness or reputation” of the famous
trademark.

* Customs Practices (Article 65)

This article is newly added in order
to enhance the protection of the trademark rights through practicing or
enforcing provisions of border regulation measures for infringing trademark
rights goods in Articles 51 through 60 of TRIPs.This article makes reference to Article 90bis of Copyright Law.

With reference to Article 51 of TRIPs,
the first paragraph provides that the trademark rights owner can petition the
customs to seize the infringing goods for preventing damages caused by the input
or output of the infringing goods through the border.

Through reference of Articles 51
through 53 of TRIPs and consideration of interests and equity of petitioner and
the seized party, the second paragraph provides the procedures and surety or
guaranty involved in upon petitioning before the customs.

With reference to Articles 52 and 54,
the third paragraph provides the notifying obligation of the customs after
having entertained the petition and practiced the seizure.

The seizure made by the customs is
legislated to cope with the urgency of exercising preventive rights from
infringement by the trademark rights owner rather than the judgment of the
substantive contents as to whether the seized goods are exactly the infringing
articles.With reference to
Articles 527 and 530(2) of Code of Civil Proceedings which provide that the
debtor can petition to cancel the provisional seizure after depositing a bond
and Article 530 of Code of Civil Proceedings which provides that the debtor can
petition to cancel the provisional measure after depositing a bond if there is a
special situation, the fourth paragraph provides “the owner of seized goods
may deposit bond doubling that in the second paragraph or appropriate guarantee
to petition the customs repealing the seizure” by which the petitioner is
guaranteed when the debtor finally loses the litigation.This is because after the seized party loses the case, the trademark
rights owner can claim damages under the current Article 61 of the Trademark Law
to have an amount, as stipulated in the current Article 66, which might be far
more the value of the seized goods.Accordingly,
without an appropriate guarantee from the seized party who might escape or cause
its assets stripped in the future, damages therefrom will not be secured.The fourth paragraph so tries to reach an equity between the bond amount
provided by the seized party and the rights of the seizing party.

With reference to Article 57 of TRIPs,
the fifth paragraph makes it clear that “the customs may grant inspection on
the seized goods upon petition by petitioner or owner of the seized goods under
the conditions not to damage the confidential data protection of seized goods”
in order that the seizing and seized parties can get access to the situations of
seized goods for further claiming the rights against the seized goods.

This article is also newly added
according to various actions for claiming rights made between parties with
reference to Article 55 of TRIPs.The
first paragraph provides when the customs shall repeal a seizure.Specifically:

1. Items 1 through 3 provide the possible
outcomes in various stages of the litigation proceedings, which will affect
interests of both parties;

2. Item 4 makes it clear that the seizure
should be repealed if the seizure-petitioner so petition;

3. Items 5 makes it clear that the
seizure should be repealed if the seized party has duly proposed a counter bond
for safeguarding interests of the seized party since the interests of seizing
party has been secured.

With reference to Article 55 of TRIPs
providing a term of 10 working days, the second paragraph provides that the term
provided in Item 1 of the first paragraph can be extended by the customs as the
case may be.In order to be clear
in practice in this country for the customs, the term is set to be 12 calendar
days.

* Damages for Goods Being Seized
(Article 67)

This article is also newly added in
order to make it clear that after the seized goods are decided not to be
infringing, the seizure-petitioner shall compensate damages caused by the
seizure to the seized party.With
reference to the provision of the latter paragraph of Article 531 of Code of
Civil Proceedings, the first paragraph stipulates that compensations from the
petitioner shall cover damages caused through providing bond to the seized
party.

The proposed bond in the amended
Article 65(2) is to guarantee the seized party from damages caused by seizure or
provision of counter bond while the bond in the amended Article 65(4) is to
guarantee the seizing party from damages caused by the seizure repeal through
provision of counter bond from the seized party.With reference to Article 103(1) of Code of Civil
Proceedings, the second paragraph stipulates that the favorable party to either
of the above two bonds has identical rights as a pledgee.

The latter paragraph of the second
paragraph also makes it clear that “container demurrage, warehouse rent,
loading/unloading fee and relevant expenses provided in the fourth paragraph of
the preceding article and the sixth paragraph of Article 65 shall be compensated
prior to the loss of petitioner or owner of the seized goods” since all these
necessary expenses relate to necessitated beneficial expenses upon claiming
rights under the legal procedure.

The third and fourth paragraphs
provide at which circumstances the relevant party can petition the return of the
involved bond.

* Certification Mark (Article 72)

For implementing the provision of
Article 22 of TRIPs relating to protection of geographical indication, the
certification mark for place of origin is included in this article for
application with reference to Article 126 of German Trademark Law and Article 4
of the US Trademark Law.

The paragraph 3 also makes it clear
that “an applicant in the preceding paragraph engaging in the business of
goods or service to be certified shall not apply for registration.”

* Collective Trademark (Article 76)

This article is newly added.One of the objects of the Trademark Law is to prevent the production of
the likeliness of confusion or mistake of a mark when used in the economic
activity.With reference to the
foreign legislations, except the collective trademark for distinguishing an
organization or its membership, the first paragraph stipulates that an
organization desiring to exclusively use a mark for distinguishing goods or
service provided by a member of said organization apply for registration of a
collective trademark according to the class covering the provided goods or
service.For example, any
association, club or other organization having a juristic person qualification
desires to sell a certain goods or provide educating or training service, which
can only be sold or provided by its member, to be thereby differentiated from
goods or service provided by other may apply for registration of a collective
trademark.

* Improper Use of Special Marks
(Article 79)

The second paragraph is newly added in
order to make it clear what are improper uses of special marks, i.e.
certification mark, collective mark and collective trademark, which will cause
these special marks to be repealed.Specifically:

1. Through Item 1, it is made
clear to be improper use if the certification mark is used as a trademark or
indicated on relevant article or document of goods or service of the
certification mark rights owner, by which the function of the certification mark
is damaged, since the function of a certification mark is to prove other’s
goods or service has a certain quality or characteristic.

2. Through Item 2, it is regarded
as improper use to harm the public under the circumstance “where the use of
collective mark or collective trademark results in misbelief of the social
public in nature of said organization.”

3. Through Item 3, it will be
taken as improper use under the case “where transference, license or
establishment of pledge is made in violation of provision of the preceding
article” since special marks have a strong nature of public interests.

4. Through Item 4, it is
considered as improper use in the case “where use regulations of the mark are
violated.”

5. Through Item 5, it is assumed
to be improper use in the general case “where there is a use of other
inappropriate means.”

* Transition Provisions (Articles
84 ~ 92)

Generally speaking, transition
provisions include the following:

1. The second installment of
registration fee after registration of the trademark under the amended Article
26 is inapplicable to trademarks registered before the enforcement of this
amended law;

2. Registered and pending service
marks (or applications) will be respectively regarded as registered and pending
trademarks (or applications) effective from the enforcement date of this amended
law since the service mark category has been abolished.

3. Registered and pending
associated trademarks or service marks (or applications) will be respectively
regarded as registered and pending independent trademarks or service marks (or
applications) effective from the enforcement date of this amended law since the
associated trademark or service mark category has been abolished.Furthermore, any of the pending ones can be withdrawn with refund.

4. Registered and pending
defensive trademarks or service marks (or applications) will be respectively
regarded as registered and pending independent trademarks or service marks upon
petition (or applications) effective from the enforcement date of this amended
law since the defensive trademark or service mark category will be finally
abolished.Again, any of the
pending ones can be withdrawn with refund.

5. A registered trademark could
be repealed if having never been put into use or having stopped using for 3
entire years.For associated or defensive trademark or service mark, this 3
year should be re-calculated from the date on which they are changed into an
independent one.

6. Applications allowed before
but not yet registered or cancelled before but successfully irrevocably caused
to be registered until or after the enforcement date of this amended law will be
assumed having paid the first installment of registration fee under the amended
law since the first installment of registration fee is equal to the difference
between the filing fees under the current and amended laws.

7. Oppositions instituted before
the enforcement date of the amended law will be maintained only when the
involved applications contain violating causes both under the current law and
the amended law in order to arrive at the goal of the amended law.As to the procedures to which oppositions should follow, the amended law
shall apply.

8. The principles disclosed in
the preceding paragraph shall apply to invalidations against trademarks,
certification marks or collective marks after the enforcement date of the
amended law.For example, while a
trademark cannot be registered if using other’s company name and designating
to be used in goods covered in the business scope of said other’s company
under Article 37(11) of the current law, it is not prohibited under Article
23(1)(16) of the amended law unless said company name is famous and the use of
the trademark is likely to cause of the general public and the company.Specifically, if the company name is not famous or there is no likeliness
of confusion or misbelief even if the designated goods or services are covered
in the business scope of the company, invalidations will be dismissed.

9. The procedures for
cancellations under the current law should be handled according those for
repeals.

* Effective date (Article 94)

Since the amended law adopts
multiple-class filing system, the post-registration opposition system, new
payment methods for the registration fees…etc. are all new systems which need
be duly announced to and adapted by the applicant and regulations about relevant
operational procedures and official fees take time to be prepared, the
enforcement date is set to be 6 months after the promulgation date, i.e.
November 28, 2003.

Claims
We Have

1. Although a tide needs not
necessarily be ‘correct’ from the historical viewpoint after some decades or
hundreds of years, people in the tide often cannot stay away from the tide but
join and temporarily enjoy in or suffer from the process in the tide.It is not known whether chasing the establishment of the electronic
environment is so related?

2. When one’s own practice is
significantly different from that or those adopted by many countries, it
normally means it is stubborn and should try to adapt itself to the common
practice.Perhaps, one application
with multiple classes might be a good example to this effect;

3. Civilized and advanced
legislation should be one that allows people to lead an easy life but not one
which allows people to disgrace the law or gradually smother the justice;

4. Law amendments are necessary
to reflect the progressiveness of the society and/or the refinement of the
legislation.Nevertheless, it is believed and found:

A. The law amendment in
a certain period or time is not necessarily the optimum or final version to the
relevant provision;

B. The person who is in charge of
or monitors the law amendment might not be the one who is most familiar with the
legal environment pertaining to the article to be amended or most suitable to
propose the law amendment;

C. It should be through the above
thoughts that every law amendment normally is accompanied by a public hearing in
order to invite opinions from the involved public for reference in proposing the
law amendment;

D. It is, however, quite possible
that some one who is not in charge of the law amendment but has the best vision
or idea as to how the law amendment should be made is not present in the hearing
for addressing his or her opinions about how the amendment should be made in
order the law amendment can be more perfect;

E. Accordingly, our concerns
should have been made clear to be that how to summon proper authoritative
opinions in the respective field of the provision to be amended in the hearing
is a great subject and challenge and should be carefully taken care of;

F. While we do not have good
ideas as to how our concerns can be achieved, we would like to conclude and
believe that the more incentives we put in causing the involved public,
especially the authoritative opinions source to attend the hearing, the more
success or optimum of the law amendment will be.

5. Famous trademarks need be
protected.For a trademark to be famous, there are lots of variables and
parameters.There is a might-be
joking truth that counterfeits have a quality better than that of genuine ones
sometimes.It might be considerable
that the laws impose some regulations as to price and quality of goods of famous
trademark to reach an equilibrium between benefits of the trademark owner and
the general public.

While law amendments cannot
be avoided, it appears that frequent amendments are not good either viewed from
any aspect although we are not so sure.